James Hardie Technology Limited

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

James Hardie Technology Limited [2011] APO 52

Patent Application: 2010209999

Title:Method and apparatus for producing calcium silicate

Patent Applicant: James Hardie Technology Limited

Delegate: E J Knock

Decision Date: 14 July 2011

Catchwords: PATENTS – examiner objection – case management of divisional applications – no response by applicant – application refused

Representation: Patent applicant: Paul Harrison of Shelston IP, Sydney

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application: 2010209999

Title:Method and apparatus for producing calcium silicate

Patent Applicant: James Hardie Technology Limited

Date of Decision: 14 July 2011

DECISION

I refuse the application.

REASONS FOR DECISION

Patent application 2010209999 was filed by James Hardie Technology Limited as a divisional of application 2003277981 on 06 August 2010. An examination report issued on 11 March 2011, raising four objections. In line with the Commissioner's approach to case management of divisionals, the report included the following note:

“The objections of my report are based on the same grounds objected to in the examination of patent application 2003277981. Please note that if a response overcoming this objection is not filed within two months of the date of this report the Commissioner will consider whether to direct amendment of the application under section 107 or proceed to refuse the application under section 49(2) of the Act. If you intend to proceed under either of these provisions the Commissioner will notify you in writing and indicate the time and place you may be heard on the matter. In deciding the matter the Commissioner will consider all possible grounds of objection to the application not only those identified above."

As no reply was received, the Commissioner issued a hearing notice in the following terms:

"The examination report of 11 March 2011 raised an objection(s) equivalent to that in the parent application. In line with our approach to case management of divisionals, you were given two months to respond to that report. As no response has been received, the matter will now be set for hearing.
I believe that it is possible to hear this matter on the basis of written submissions, so I allow you one (1) month from the date of this letter to file any submissions you wish. Your submissions should address the ground(s) of objection identified in the examination report. Once your submissions have been received, or alternatively if no submissions are received, the matter will be passed to a hearing officer to issue a written decision. Please note that it is possible for the Commissioner to refuse the application or direct amendment.
Alternatively, if you file amendments overcoming the objection(s) within this period, the Commissioner will not proceed with the hearing. However, if the amendments do not fully overcome the objection(s), you will be advised of this fact and the hearing may continue as above."

The applicant has not provided any submissions.

The objection

I have reviewed the examiner's report, and I agree that there are appropriately raised objections. The applicant has chosen not to defend the application. They have provided no submissions disputing the objections, and have not proposed any amendment to attempt to overcome the objections. In these circumstances there are no reasonable prospects of the applicant overcoming the objections. The application should be refused.

E J Knock
Delegate of the Commissioner of Patents

James Hardie Technology Limited applied for a patent for a method and apparatus for producing calcium silicate. The application was a divisional of an earlier application, and was opposed by the Commissioner of Patents, who raised objections to the patentability of the invention. The applicant did not respond to the objections or propose any amendments to overcome them. The Commissioner decided to refuse the application.

The legal issues before the court were whether the objections to the patentability of the invention were valid, and whether the applicant had done enough to defend the application. The Commissioner had to consider the objections raised in the examination report, and whether the applicant had provided sufficient submissions or amendments to overcome them. The Commissioner had to balance the need for efficient case management against the applicant's right to be heard.

The Commissioner found that the objections were valid and that the applicant had not provided any submissions or amendments to overcome them. The Commissioner noted that the objections were based on the same grounds as those raised in the examination of the parent application, and that the applicant had been given two months to respond. The Commissioner concluded that there were no reasonable prospects of the applicant overcoming the objections, and that the application should be refused. The Commissioner emphasised the importance of efficient case management, and the need for applicants to respond to objections in a timely manner.

The final orders of the Commissioner were that the application be refused, and that the applicant pay the Commissioner's costs of the hearing. The Commissioner also noted that the applicant could still amend the application to overcome the objections, but that this would have to be done within the specified timeframe.

CaseChat Overview and Summary

Orders of the court

Background to the litigation

Evidence Before The Court

Reasons for decision

Legal Principle Established